Pioneer Kabushiki Kaishav.Hitachi High Tech-nologies America, Inc.

Trademark Trial and Appeal Board

Apr 27, 2005

No. 91125458 (T.T.A.B. Apr. 27, 2005)

DUNN
Mail date: April 27, 2005

Opposition No. 91125458

Pioneer Kabushiki Kaisha dba
Pioneer Corporation

v.

Hitachi High Technologies
America, Inc.

Before Seeherman, Quinn, and Bucher, Administrative Trademark
Judges.

By the Board:

This case comes up on the third round of discovery motions
filed in the course of this proceeding:
a) applicant’s motion for a protective order to prevent
the taking of additional depositions, filed April 26,
2004;

b) applicant’s motion to compel supplemental responses to
document requests, filed July 12, 2004; and

c) opposer’s motion for sanctions for failure to produce
witnesses for depositions, filed July 19, 2004.1

We briefly review the relevant chronology. On April 16,
2002, Pioneer Kabushiki Kaisha dba Pioneer Corporation (Pioneer)

1 The delay in acting upon these matters is regretted.
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91125458
2
filed a notice of opposition against application Serial No.
76208230 on the ground that applicant Hitachi High Technologies
America, Inc.’s (Hitachi) mark SUPERSCAN ELITE, if used on its
audio and video goods, would so resemble Pioneer’s previously
registered mark ELITE (Registration No. 1591868) for the same or
similar goods as to be likely to cause confusion. The notice of
opposition was subsequently amended to add claims that Hitachi
does not have a bona fide intention to use the mark, and that
Hitachi’s use of its mark will dilute Pioneer’s famous mark.
Hitachi’s answer denied the salient allegations of the amended
notice of opposition.
On May 16, 2003, the Board denied as moot Pioneer’s original
and renewed motions to compel supplemental discovery responses,
finding that the discovery responses already had been
supplemented. On January 13, 2004, the Board denied as moot
Hitachi’s motion for discovery sanctions against Pioneer for
Pioneer’s failure to produce a witness for deposition, finding
that the parties had come to an agreement as to how and when the
deposition would be conducted. However, the Board granted
Pioneer’s cross-motion to compel the continued deposition of
Hitachi’s officer Michael Levans in both his capacity as a Fed.
R. Civ. P. 30(b)(6) witness and in his individual capacity, based
on its finding that the original deposition had been adjourned to
enable Hitachi to complete its document production. The Board
reset discovery to close on May 30, 2004.
Opposition No. 91125458
3
HITACHI’S MOTION FOR A PROTECTIVE ORDER TO PREVENT THE TAKING OF
ADDITIONAL DEPOSITIONS

On April 16, 2004, following Hitachi’s supplemental
production of documents on the claim that Hitachi has no bona
fide intention to use the SUPERSCAN ELITE mark, Pioneer indicated
to Hitachi by letter that it intended to depose six additional
Hitachi employees, each named in the documents produced by
Hitachi, regarding the claim that Hitachi has no bona fide
intention to use the SUPERSCAN ELITE mark. Hitachi contends that
these additional depositions are duplicative, unnecessary, and
vexatious, and seeks a protective order barring the depositions.
Hitachi argues that it has responded to four sets of
interrogatories totaling 65 questions, four sets of requests for
document production totaling 61 requests, and three sets of
requests for admission totaling 41 requests; and that “hundreds
of boxes” of documents have been made available to Pioneer. In
addition, Hitachi argues that Pioneer issued a subpoena duces
tecum with eighteen production categories, and deposed two of
Hitachi’s senior officers: Mr. Levans, Vice President and General
Manager of the Electronics Product Division, and Mr. Snokes,
Executive Vice President and General Counsel. Pursuant to the
Opposition No. 91125458
4
Board’s earlier order, Hitachi notes that Pioneer will be allowed
to further depose Mr. Levans.2
Pioneer opposes entry of the requested protective order,
contending that all of the additional people were identified in
discovery documents produced by Hitachi as “intimately involved
in the decisions regarding creation, use, pricing, marketing and
distribution of [goods under] the subject marks”; that “Mr.
Levans cannot personally testify to the thought processes,
discussions or communications” among the potential deponents; and
that the notices of discovery deposition were appropriately
served on these witnesses.
While a party may take the discovery deposition of “any
person” under Fed. R. Civ. P. 30(a), the Board has the power to
limit or bar a deposition if it determines that the discovery
sought is obtainable from other sources that are more convenient
and less burdensome or duplicative. See Fed. R. Civ. P. 26; FMR
Corp. v. Alliant Partners, 51 USPQ2d 1759 (TTAB 1999). Rule
26(c) emphasizes “the complete control that the court has over
the discovery process.” Wright & Miller, 8 Fed. Prac. & Proc.
Civ.2d §2036 (1990). Because it is impossible to set out in a

2 The Board will not address Hitachi’s argument that it is
“frivolous” for Pioneer to maintain the claim that Hitachi lacked a
bona fide intent to use the mark in the face of Levans’ testimony and
the documents already produced, including those relied upon by Pioneer
in opposing entry of a protective order. See Lane Ltd. v. Jackson
International Trading Co., 33 USPQ2d 1351, 1355 fn.7 (TTAB 1994);
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503,
1507 (TTAB 1993). Pioneer’s pleading of the claim is sufficient, and
its time for proving its case has not yet arrived. This order is
limited to the discovery motions listed above.
Opposition No. 91125458
5
rule all the circumstances that may require limitations on
discovery or the kinds of limitations that may be needed, the
rules, instead, “permit the broadest scope of discovery and leave
it to the enlightened discretion of the … court to decide what
restrictions may be necessary in a particular case.” Id. In view
of the limited jurisdiction of the Board in deciding only issues
of registrability, “each party and its attorney has a duty not
only to make a good faith effort to satisfy the discovery needs
of its opponent but also to make a good faith effort to seek only
such discovery as is proper and relevant to the specific issues
involved in the case.” See Luehrmann v. Kwik Kopy Corp., 2
USPQ2d 1303, 1305 (TTAB 1987); Sentrol, Inc. v. Sentex Systems,
Inc., 231 USPQ 666, 667 (TTAB 1986).
Trademark Rule 2.120(f) provides that, upon motion by a
party from whom a discovery deposition is sought, and for good
cause shown, the Board may make any order which justice requires
to protect a party from annoyance, embarrassment, oppression,
undue burden or expense. Among the types of discovery orders
that may be entered, the Board has the discretion to enter a
protective order that a discovery deposition not be had. See
Fed. R. Civ. P. 26(c)(1). The party seeking a protective order
bears the burden to show good cause therefor. To establish good
cause, the movant must submit “a particular and specific
demonstration of fact, as distinguished from stereotyped and
Opposition No. 91125458
6
conclusory statements.” FMR Corp., supra at 1760 (citation
omitted).

Deposition of Shigehiko Kobayashi
Hitachi argues that Mr. Kobayashi is an executive Vice
President, a member of the Board of Directors, and Mr. Levans’
immediate superior, who reports directly to Hitachi’s president;
that any information regarding Hitachi’s adoption and use of
trademarks would reach Mr. Kobayashi through Mr. Levans, Vice
President and General Manager of the Electronics Product
Division; and that, as a high level executive, Mr. Kobayashi
should not be required to attend the noticed deposition.
Pioneer contends that Mr. Kobayashi was an “involved
participant in the SUPERSCAN or SUPERSCAN ELITE mark throughout
2003 and 2004” as demonstrated by three email messages.3 On
March 11, 2003, a Hitachi employee sent an email to Mr. Levans
and Yugi Hidaka, with a copy to Mr. Kobayashi, discussing a
prospective deal to establish the SUPERSCAN or SUPERSCAN ELITE
brand in partnership with another business. (Pioneer’s

3 The documentary evidence is largely Hitachi’s internal email, and
was marked confidential and submitted under seal. The Board will
exercise discretion in describing the documents, and refer only to Mr.
Levans, and the six potential deponents, by name and title.
The term SUPERSCAN alone, instead of the mark SUPERSCAN ELITE is
present in many email messages. Since the emails were produced by
Hitachi in response to document requests regarding the subject mark
SUPERSCAN ELITE, and submitted by Pioneer in its opposition to
Hitachi’s motion for a protective order, we find that there is no
dispute as to the relevance of the emails, and we will presume the
internal email employed shorthand references to the full mark.
Opposition No. 91125458
7
Opposition, Bates No. 11-12). On January 26, 2004, Mr. Levans
sent an email to Mr. Hidaka and Masatsugu Misu, with copies to
three people, including Mr. Kobayashi, with his ideas for a
meeting with a prospective SUPERSCAN buyer. (Pioneer’s
Opposition, Bates No. 386). On January 28, 2004, Mr. Misu sent
an email to sixteen people, including Mr. Kobayashi, attaching
“presentation material for our SUPERSCAN proposal.” (Pioneer’s
Opposition, Bates No. 129).
We find that the documentary evidence relied upon by Pioneer
to demonstrate that Mr. Kobayashi has knowledge of Hitachi’s bona
fide intent to use the mark is unconvincing, insofar as the three
SUPERSCAN emails were not written by Mr. Kobayashi, were not
directed exclusively to Mr. Kobayashi, and apparently elicited no
written response. The evidence supports Hitachi’s position that
Mr. Kobayashi has no unique or superior personal knowledge of the
facts, and that Hitachi has shown good cause for entry of a
protective order. See Folwell v. Hernandez, 210 FRD 169
(M.D.N.C. 2002)(unless a high level executive has unique personal
knowledge about the controversy, the court should regulate the
discovery process to avoid oppression, inconvenience, and burden
to the corporation and to the executive); FMR Corp. v. Alliant
Partners, supra, at 1762 (“courts have granted a protective order
when a party seeks to initiate its discovery ‘at the top’ before
exhausting less intrusive discovery methods”).
Opposition No. 91125458
8
Hitachi’s motion for a protective order is granted with
respect to the deposition of Mr. Kobayashi.

Deposition of Mr. Hakai
In Hitachi’s April 21, 2004 letter responding to Pioneer’s
letter that Pioneer intended to depose six additional Hitachi
employees, Hitachi informed Pioneer that “we have no idea who Mr.
Hakai is.” In an April 22, 2004 letter, Pioneer informed Hitachi
that “Mr. Hakai works in the Engineering Department and is also
mentioned in the documents that you have produced.” The relevant
document is an organizational chart effective October 1, 2002
which shows the current holder of, and relationship among,
nineteen positions of “EPD” (presumably the “Electronics Product
Division”). One box has been darkened and is barely discernible,
but the words “Engineering Dept.” and “Hakai” appear. (Pioneer’s
Opposition, Bates No. 032). The chart does not make any
reference to the mark SUPERSCAN ELITE.
The Board agrees with Hitachi that Pioneer’s evidence does
not support its conclusion that Mr. Hakai has been “intimately
involved in the decisions regarding creation, use, pricing,
marketing and distribution of [goods under] the subject marks …
.” In fact, there is no evidence that Mr. Hakai has had any
involvement with the SUPERSCAN ELITE mark, or has any knowledge
relevant to Hitachi’s bona fide intent to use the mark. Hitachi
has shown good cause for entry of a protective order, and its
Opposition No. 91125458
9
motion for a protective order is granted with respect to the
deposition of Mr. Hakai.

Depositions of Yuji Hidaka, Dennis Battaglia, Masatsugu Misu and
Anthony Duda

According to the EPD organizational chart, the remaining
four potential deponents (Hidaka, Battaglia, Misu, and Duda) are
subordinates of Mr. Levans, General Manager of the department.
Mr. Hidaka is listed as Deputy General Manager, and Mr. Battaglia
is listed under Mr. Hidaka as the Manager of the Home Electronics
Department. Messrs. Misu and Duda are listed as account managers
under Mr. Battaglia. Hitachi describes the four men as part of
the sales team for Hitachi’s Electronic Product Division, with
all four ultimately reporting to Mr. Levans.
Pioneer seeks the depositions of these men on the basis of
their alleged unique and intimate knowledge of Hitachi’s
marketing plans for its SUPERSCAN ELITE mark as shown by 74 pages
of email messages produced by Hitachi and relied upon by Pioneer
in its assertion that the potential deponents have information
relevant to Pioneer’s claim that Hitachi lacked a bona fide
intent to use the mark in commerce.

Deposition of Dennis Battaglia
Dennis Battaglia was named in many of the 74 pages of email
which discussed the creation of the SUPERSCAN ELITE logo and the
pricing and marketing of the products to be associated with the
Opposition No. 91125458
10
mark. (Pioneer’s Opposition, e.g. Bates No. 013, 014, 016, 019,
021, 022, 032, 105, 117, 122). Pioneer relies on the prevalence
of Mr. Battaglia’s name in the email messages to argue that he
has knowledge of facts relevant to Pioneeer’s claim that Hitachi
lacked a bona fide intent to use the mark.
Hitachi points out that Dennis Battaglia neither initiated
nor responded to any of the email messages. Indeed, the
documentary evidence demonstrates that Mr. Battaglia was never
the sole recipient of an email message, and in only a few
instances was Mr. Battaglia one of several recipients (Pioneer’s
Opposition, e.g. Bates No. 16, 122, 129, 251). In all other
cases, Mr. Battaglia was merely one in a group, generally
numbering four to sixteen people, “copied” on emails to others.
In these circumstances, we see no evidence that Mr. Battaglia has
unique knowledge on the issue of whether Hitachi had the
requisite bona fide intent to use the SUPERSCAN ELITE mark, or
indeed any knowledge, and we find that Hitachi has shown good
cause for entry of a protective order. Hitachi’s motion for a
protective order is granted with respect to the deposition of
Dennis Battaglia.

Depositions of Yuji Hidaka, Masatsugu Misu and Anthony Duda
In contrast to Dennis Battaglia, the remaining men not only
were “kept in the loop” regarding SUPERSCAN ELITE developments,
Opposition No. 91125458
11
but took an active role in generating information for others
regarding the use of the SUPERSCAN ELITE mark.
The documents relied upon by Pioneer in seeking Mr. Hidaka’s
deposition indicate that Mr. Hidaka authored emails on the sales
negotiations for plasma TV products (Pioneer’s Opposition, Bates
No. 019-020); the development chart for the SUPERSCAN plasma TV
(Pioneer’s Opposition, Bates No. 105-106); the model number to be
used on the SUPERSCAN products (Pioneer’s Opposition, Bates No.
117, 121); a SUPERSCAN import issue (Pioneer’s Opposition, Bates
No. 127); and packaging and shipping instructions for SUPERSCAN
products (Pioneer’s Opposition, Bates No. 198-200, 207-209, 402-
405).
The documents relied upon by Pioneer in seeking Masatsugu
Misu’s deposition indicate that Mr. Misu forwarded information on
the dimensions of the SUPERSCAN products (Pioneer’s Opposition,
Bates No. 122); SUPERSCAN presentation material (Pioneer’s
Opposition, Bates No. 129); SUPERSCAN price quotations (Pioneer’s
Opposition, Bates No. 196, 248-249, 270-271); the arrangements
for a sales meeting (Pioneer’s Opposition, Bates No. 202); and
information on how SUPERSCAN products would be shipped (Pioneer’s
Opposition, Bates No. 203-204, 429-430).
The documents relied upon by Pioneer in seeking Anthony
Duda’s deposition indicate that Mr. Duda developed a chart on
SUPERSCAN prices (Pioneer’s Opposition, Bates No. 021); forwarded
SUPERSCAN ELITE product information (Pioneer’s Opposition, Bates
Opposition No. 91125458
12
No. 022); forwarded SUPERSCAN carton box designs (Pioneer’s
Opposition, Bates No. 402); and forwarded information on the
SUPERSCAN logo (Pioneer’s Opposition, Bates No. 422, 443-454).
As Hitachi notes, Mr. Levans was listed on each email sent
or received by these three men. However, Hitachi’s argument that
harassment could be the only motive for their depositions is not
well taken. Pioneer is entitled to obtain discovery testimony
with respect to subject matter which is discoverable under Fed.
R. Civ. P. 26(b)(1). While the testimony of Messrs. Hidaka, Misu
and Duda may overlap with Mr. Levan’s testimony on many, if not
all, points, Hitachi has not shown that their testimony would be
entirely duplicative and would not lead to relevant information
based on their independent experiences. Hitachi thus has failed
to show good cause for entry of a protective order with respect
to the depositions of Yuji Hidaka, Masatsugu Misu and Anthony
Duda.
In sum, Hitachi’s motion for a protective order is granted
with respect to Messrs. Kobayashi, Hakai and Battaglia, and it is
denied with respect to Messrs. Hidaka, Misu and Duda.
Accordingly, Pioneer is allowed until thirty days from the
mailing date of this order to schedule and conduct the
depositions of Yuji Hidaka, Masatsugu Misu, and Anthony Duda, as
follows: These three depositions are limited to no longer than
three hours per deponent, are limited to the subject of Hitachi’s
bona fide intent to use the mark SUPERSCAN ELITE on the goods
Opposition No. 91125458
13
listed in the application, and, unless the parties consent to a
different schedule, the witnesses are not available, or other
circumstances arise which make such scheduling unduly difficult,
the depositions are to be conducted consecutively over the course
of one and one half days.4

PIONEER’S MOTION FOR JUDGMENT AS A SANCTION
As noted above, Pioneer served the notices of deposition on
April 19, 2004, and Hitachi filed its motion for a protective
order on April 26, 2004. The Board had neither suspended
proceedings nor decided Hitachi’s motion by the scheduled
deposition dates of May 11-13, 2004.5 Pioneer was informed by

4 The parties may extend the date for these three depositions on
consent, but if the parties fail to agree to a later date, the Board
will adhere to the timetable set by this order, namely, that the
depositions must be taken within thirty days of the mailing date of
this order. Both parties are expected to cooperate in the timely
taking of these discovery depositions.
5 The Board notes that much time and effort by the parties and the
Board might have been conserved if either party had requested a
telephone conference on Hitachi’s motion for a protective order. The
Board’s announcement of the permanent expansion of telephone
conferencing notes that motions to compel attendance of a witness at a
discovery deposition and motions to quash a notice of deposition are
especially suitable for disposition on an expedited basis. See the
June 20, 2000 Official Gazette notice titled Permanent Expansion of
Telephone Conferencing on Interlocutory Matters in Inter Partes Cases
Before the Trademark Trial and Appeal Board. The notice also is
posted on the USPTO's home page, at
http://www.uspto.gov/web/offices/com/sol/og/2000/week25/pattele.htm.
While the Board may initiate such telephone conferences, the
prompt review of the necessary papers may be delayed, as it was here,
when multiple motions continue to be filed. By the time the Board
issued its suspension order three months after Hitachi's motion for a
protective order was filed, attendance at the scheduled depositions
was a moot point, and the number and subject matter of the motions
subsequently filed made a telephone conference much less appropriate.

Opposition No. 91125458
14
Hitachi that the six Hitachi witnesses would not appear for the
noticed depositions. The six witnesses did not appear.
On July 12, 2004, Hitachi filed a motion to compel
supplemental responses to document requests. On July 19, 2004,
Pioneer filed a motion for sanctions pursuant to Trademark Rule
2.120(g)(2), seeking entry of judgment for Hitachi’s failure to
produce requested discovery in the form of the witnesses for
depositions. On July 26, 2004, the Board suspended proceedings
retroactive to the July 12, 2004 filing date of Hitachi’s motion
to compel.
Insofar as proceedings were suspended, Hitachi did not file
a response to Pioneer’s motion for judgment as a sanction.6 In
view of the long pendency of these motions, and because, on its
face, Pioneer's motion for sanctions is not well-taken, we will
not further delay this proceeding by resetting Hitachi’s time to
submit a response. The Board will now determine Pioneer’s motion
for judgment as a sanction.

6 On August 13, 2004, Hitachi filed a motion to seek clarification
of the Board's suspension order. Specifically, in view of the close
timing of the filing of the various discovery motions and issuance of
the Board’s order, Hitachi sought to clarify whether Pioneer’s motion
for sanctions would be decided with Hitachi’s motion to compel, making
Hitachi’s response due immediately, or if action on Pioneer’s motion
was suspended, and Hitachi’s time for response would be reset when
proceedings resumed. Pioneer opposed the motion for clarification,
arguing that Pioneer’s motion for sanctions had been received by
Hitachi prior to issuance of the Board’s suspension order, and that
Hitachi had failed to file a timely response. Hitachi’s motion is
denied as moot for the reasons explained later herein.

Opposition No. 91125458
15
At the outset, the Board notes that large sections of
Pioneer’s motion for sanctions are, in effect, a sur-reply brief
to Hitachi’s motion for a protective order.7 See Pioneer’s
Motion for Sanctions, p. 4-9, 16-22. Trademark Rule 2.127(e)(1)
prohibits the filing of sur-reply briefs. Accordingly, Pioneer’s
arguments in its motion for sanctions regarding the merits of
Hitachi’s motion for a protective order or the points made in
Hitachi’s reply brief have been given no consideration.
With respect to Pioneer’s arguments regarding whether
Hitachi’s failure to produce its witnesses for noticed
depositions warrants sanctions under Trademark Rule 2.120(g)(2),
we note that, prior to the scheduled deposition dates, Hitachi
filed a motion (decided herein) for a protective order to prevent
the taking of the depositions. Plainly, the appearance by
Hitachi’s employees at the depositions would moot Hitachi’s
motion for a protective order barring the depositions.8 In these
circumstances, we do not consider Hitachi’s non-appearance at

7 The Board also notes that there is no reason to file complete
copies of exhibits which were submitted previously.
8 Moreover, insofar as the Board does not award attorneys' fees or
other costs, a belated grant of Hitachi’s motion for a protective
order could not serve to make Hitachi whole for six depositions which
would have already taken place. See generally Trademark Rules
2.120(f); 2.120(g)(1); and 2.127(f); TBMP §502.05 (2nd. ed. rev.
2004).
Opposition No. 91125458
16
depositions to be sanctionable conduct, and we deny Pioneer’s
motion for sanctions in the form of judgment.9

HITACHI’S MOTION TO COMPEL PRODUCTION OF SURVEY DOCUMENTS
Hitachi moves to compel supplemental responses to the
discovery requests listed below, part of Hitachi’s first request
for production of documents, served February 11, 2003, or in the
alternative, to allow Hitachi a limited time to serve a subpoena
on Robert Klein, the non-party expert witness in possession of
the requested documents. Pioneer opposes the motion on the
ground that it cannot provide what it does not possess; that
Hitachi’s document request is not applicable to documents held by
a non-party witness; and that insofar as discovery has closed,
Hitachi has foregone its opportunity to subpoena the requested
documents.
Document Request No. 32
All documents referring or relating to any
survey or study Opposer has conducted or has
caused to be conducted regarding recognition
of or reaction to Opposer’s mark or
Applicant’s Mark, or any confusion among the
marks.

9 We are not persuaded that the circumstances here are analogous to
the federal court case cited by Pioneer, Pioche Mines Consolidated,
Inc., et. al. v. Dolman, 333 F.2d 257, 268-269, 8 Fed. R. Serv. 2d 37
(9th Cir. 1964), cert. denied, 380 U.S. 956, 85 S.Ct. 1082, 13 L.Ed.
2d 972 (1965), for the proposition that, even if a motion for a
protective order is pending, a party is subject to judgment as a
sanction for failure to appear at a deposition.
We note that, in the other federal court case cited by Pioneer in
support of sanctions, FAA v. Landy, 705 F.2d 624 (2d Cir. 1983), there
was no motion for judgment as a sanction, but an issue as to the
admissibility of a deposition.
Opposition No. 91125458
17
Document Request No. 3610
All documents and things reviewed, exchanged
with, sent to, or relied upon by any expert
retained by Opposer in relation to this
opposition proceeding.

Document Request No. 37
All documents and things to be utilized by
any expert witness in any testimony connected
with this opposition proceeding.

On April 28, 2004, Pioneer notified Hitachi by letter that
Pioneer intended to use the testimony of Robert Klein, a survey
expert, and forwarded his curriculum vitae. On April 30, 2004,
Hitachi notified Pioneer that Hitachi wished to depose Mr. Klein
but that, before his deposition could be scheduled, Pioneer would
need to provide supplemental responses to the above document
requests. On the same day, Pioneer served Hitachi with its
second supplemental responses to the document requests. To each
of the requests listed above, Pioneer made the same response:
Responding party will produce documents
responsive to this category at a mutually
convenient time and location.

On May 5, 2004, Pioneer provided Hitachi with copies of
Mr. Klein’s report and various exhibits.

10 In federal court, parties are required to disclose the identity
of potential expert witnesses, accompanied by a written expert report
containing "a complete statement of all opinions to be expressed and
the basis and reasons therefor" and "the data or other information
considered by the witness in forming the opinions." See Fed. R. Civ.
P. 26. The Board has declined to adopt the mandatory disclosure
requirements of the federal rules. See Trademark Rule 2.120(a)(“The
provisions of the Federal Rules of Civil Procedure relating to
automatic disclosure, scheduling conferences, conferences to discuss
settlement and to develop a discovery plan, and transmission to the
court of a written report outlining the discovery plan, are not
applicable to Board proceedings.”).
Opposition No. 91125458
18
On May 20, 2004, Hitachi deposed Mr. Klein. During his
deposition, Mr. Klein referred to documents generated in the
course of conducting the survey. On May 28, 2004, Hitachi
informed Pioneer by letter that Hitachi would present a report by
survey expert George Mantis rebutting Mr. Klein’s testimony and
requested that Pioneer “immediately produce copies of all
documents in the custody or control of Mr. Klein or his firm
relating to the survey he performed, including, but not limited
to the data printouts, the completed questionnaires and
screeners, and the validation documents and tally sheets.” On
June 14, 2004, Hitachi sent a second letter to Pioneer repeating
the request for supplemental documents.
On July 12, 2004, Hitachi filed the instant motion to
compel.11 On July 27, 2004, Pioneer filed its opposition
thereto, including counsel’s declaration that, with one
exception,12 “At no time have I ever had possession, custody or
control of the documents referred to by Mr. Klein in his
deposition.”
Fed. R. Civ. P. 34(a) provides that a party may request
documents and things “which are in the possession, custody or
control of the party upon whom the request is served.” Control

11 The Board notes that Hitachi’s motion to compel demonstrates
Hitachi’s good faith effort to resolve the discovery dispute and
includes the required copies of the relevant document requests and
responses pursuant to Trademark Rule 2.120(e)(1).
12 The declaration of Pioneer’s counsel, Mr. Skousen, notes that a
data printout sheet was provided to him by Mr. Klein the day before
Mr. Klein’s deposition was taken, but it was returned to Mr. Klein.
Opposition No. 91125458
19
with respect to the production of documents is defined as "not
only as possession, but as the legal right to obtain the
documents requested upon demand." Cochran Consulting, Inc. v.
Uwatec USA, Inc., 102 F.3d 1224, 1229-1230, 41 USPQ2d 1161, 1166
(Fed. Cir. 1996), quoting Searock v. Stripling, 736 F.2d 650, 653
(11th Cir. 1984).13 If documents are available from a party, it
has been thought preferable to have them obtained pursuant to
Rule 34 rather than subpoenaing them from a nonparty witness.
Wright & Miller, 8A Fed. Prac. & Proc. Civ.2d §2204 (1990). See
Haworth Inc. v. Herman Miller Inc., 998 F.2d 975, 978, 27 USPQ2d
1469, 1472 (Fed. Cir. 1993)(“court could properly require [party]
to seek discovery from its party opponent before burdening the
nonparty”).14 Following a “highly fact-specific” inquiry into
the circumstances, parties have been found to have a legal right
to obtain requested documents that have been turned over to the

13 Lack of control may be considered an objection to the discovery
request and, like any such objection, it may be waived. Wright &
Miller, 8A Fed. Prac. & Proc. Civ.2d §2210 (1994, updated by 2005
Pocket Part); Henderson v. Zurn Indus., Inc., 131 FRD 560, 564 (D.
Ind. 1990).
14 The cases cited by the parties are largely inapposite. The Board
will not discuss the cases which construe Fed. R. Civ. P. 26 mandatory
disclosure requirements not applicable to Board proceedings, for
example, B.C.F. Oil Refining, Inc. v. Consolidated Edison Co. of N.Y.,
Inc., 171 FRD 57 (S.D.N.Y. 1997); Mushroom Associates v. Monterey
Mushrooms, Inc., 25 USPQ 1304 (N.D. Cal. 1992); In re Air Crash
Disaster at Stapleton Int'l Airport, 720 F. Supp. 1442 (D. Co. 1988);
and Quadrini v. Sikorsky Aircraft Division, United Aircraft Corp., 74
FRD 594 (D. Conn. 1977). Similarly, the Board will not discuss those
cases in which the responding party objected to production of
documents on the basis of work product privilege, a privilege which
has not been asserted here. See Hager v. Bluefield Regional Medical
Center, Inc., 170 FRD 70 (D. D.C. 1997); and Vaughan Furniture Co.
Inc. v. Featureline Mfg., Inc., 156 FRD 123 (M.D.N.C. 1994).

Opposition No. 91125458
20
party’s attorney, its insurer, a related company, or a former
employee who receives compensation. Wright & Miller, 8A Fed.
Prac. & Proc. Civ2d §2210 (1990). See Alper v. U.S.A., 190 FRD
281, 283 (D. Mass 2000)(“Given the fact that Dr. Becker is
Defendant’s expert, the documents which Plaintiff seeks from him
may be considered to be within Defendant’s control.”); In re
Folding Carton Antitrust Litigation, 76 FRD 420, 423 (N.D. Ill.
1977)(“While the right to withhold payment does not ipso facto
mean defendants will be able to procure the documents, it is
clearly an indicia of control. At the very least, defendants
should make an inquiry … This is especially true where, as here,
defendants do not assert that the [non-parties] are unwilling or
unable to cooperate.”).
Here, we find that Hitachi acted reasonably in assuming that
documents related to the survey Pioneer commissioned would be in
Pioneer’s possession or control, and that Pioneer acted
unreasonably in failing to inform Hitachi that they were not,
thereby depriving Hitachi of the opportunity to timely seek a
subpoena and obtain the documents by other means. A party may
not mislead its adversary by stating that it will produce
documents, and then fail to do so and claim that the documents
are not within its possession or control. “[I]t should be enough
for the party to respond by saying that a particular document is
not in existence or that it is not in the responding party's
possession, custody, or control.” Wright & Miller, 8A Fed. Prac.
Opposition No. 91125458
21
& Proc. Civ.2d §2213 (1990) citing RCA Mfg. Co. v. Decca Records,
Inc., 1 FRD 433, 436 (W.D.N.Y. 1940)(“If the documents and things
sought to be produced are not in [the party’s] custody or under
their control, a statement to that effect is sufficient to excuse
it from compliance with an order for their production, but if
[the party] know[s] where and under whose control they presently
are then [the party] shall so state in detail.”); Rayman v.
American Charter Federal Sav. & Loan Ass'n, 148 FRD 647, 651 (D.
Neb. 1993)(“If all such documents have been produced, defendant
should clearly indicate that fact under oath.”). See also
Petroleum Ins. Agency v. Hartford Acc. & Indem. Co., 106 FRD 59,
66 (D. Mass. 1985).
Hitachi’s motion to compel is granted. To the extent that
the requested supplemental documents are under Pioneer’s control
as the party commissioning the survey, Pioneer is ordered to
serve Hitachi with copies of any documents responsive to Document
Request Nos. 32, 36 and 37, including the documents described in
Mr. Klein’s deposition, within 30 days of the mailing date of
this order.
If Pioneer is unable to comply for lack of possession or
control of the responsive documents, Pioneer must file a
declaration with the Board within thirty days of the mailing date
of this order so stating, with a full explanation of its request
to Mr. Klein for copies of the responsive documents, and the
rationale provided by Mr. Klein for any refusal to provide such
Opposition No. 91125458
22
copies. On receipt of such a declaration, the Board will suspend
proceedings to allow Hitachi time to obtain the requested
supplemental documents by subpoena.
Discovery closed in this case on May 30, 2004. The Board
will reopen discovery for the limited purpose of allowing both
parties to complete follow-up discovery regarding the three
discovery depositions of Hitachi employees ordered herein and the
production of survey documents by Pioneer also ordered herein.
In addition, each party is hereby ordered to respond to any
outstanding discovery requests within thirty days of the mailing
date of this order.
Discovery and trial dates are reset as follows:
DISCOVERY to close June 15, 2005

30-day testimony period for party
in position of plaintiff to close: September 13, 2005

30-day testimony period for party
in position of defendant to close: November 12, 2005

15-day rebuttal testimony period
to close: December 27, 2005

In each instance, a copy of the transcript of testimony
together with copies of documentary exhibits, must be served on
the adverse party within thirty days after completion of the
taking of testimony. Trademark Rule 2.l25.
Briefs shall be filed in accordance with Trademark Rule
2.128(a) and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.